UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/455889
APPLICANT: Wolf Designs, Inc.
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CORRESPONDENT ADDRESS: DONALD M. CISLO, ESQ. CISLO & THOMAS LLP 233 WILSHIRE BOULEVARD, SUITE 900 SANTA MONICA, CALIFORNIA 90401-1211
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom103@uspto.gov
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MARK: WOLF DESIGNS...THE ORIGINAL JEWELRY BOX. ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/455889
The assigned examining attorney has reviewed the referenced application and determined the following.
If the applicant is the owner of Registration No. 2331518, the applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812.
The applicant must insert a disclaimer of DESIGNS and ORIGINAL JEWELRY BOX and 1834 in the application. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use DESIGNS and ORIGINAL JEWELRY BOX and 1834 apart from the mark as shown.
Laudatory terms, those which attribute quality or excellence to goods or services, are equivalent to other descriptive terms under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.03(k). That is, laudatory terms are nondistinctive and unregistrable without proof of acquired distinctiveness. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (THE ULTIMATE BIKE RACK); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (BEST and PREMIER); In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998) (QUESO QUESADILLA SUPREME); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995) (SUPER BUY); General Foods Corp. v. Ralston Purina Co., 220 USPQ 990 (TTAB 1984) (ORIGINAL BLEND); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA’S FAVORITE POPCORN).
ORIGINAL means “first” or preceding all others in time. See http://www.yourdictionary.com. Therefore, ORIGINAL JEWELRY BOX is laudatorily descriptive of jewelry boxes. DESIGNS refers to decorative or artistic work. Id. Presumably, applicant’s goods are designs. 1834 describes the year in which applicant began making its goods. All of these terms describes attributes of applicant’s goods and must be disclaimed.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
/Kathleen M. Vanston/
Examining Attorney
Law Office 103
(703) 308-9103 ex 188
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.